- Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentablePTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision
The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.
RulingsFinal written decision- BurdenNot shown unpatentable
“prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22
Patent outcomesUS 11,215,039 not shown unpatentableClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · NautilusPatents in suitUS 11,215,039 - PTAB · Apr 13, 2023 · PGR2023-00003 · APJ William A Capp · PGR · Institution
The Board instituted PGR on claims 1–5 after finding claim 1 more likely than not anticipated by Davison.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“In view of the foregoing and for purposes of this preliminary stage of the proceeding, we will construe the “optimized” term as relating to a hole shape associated with a known liner design that most closely approximates the desired hole shape in some objectively discernable manner when compared to hole shapes that are associated with other liner designs that are maintained in a library. Converge toward the desired hole shape” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“1 QinetiQ has filed a motion to dismiss the Petition. Paper 6. Dynaenergetics opposes the motion. Paper 7. We dispose of the motion to dismiss in a separate order issued substantially contemporaneously herewith.” slip op. at 2
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,215,039 - PTAB · Apr 3, 2023 · IPR2022-01605 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR of claims 1 and 2 on all asserted grounds, finding a reasonable likelihood that both claims would have been obvious over Schreibfeder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. 5 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Interim Procedure 9 (emphasis added); see also PO Sur-Reply 5 (acknowledging that Petitioner stipulated after the Patent Owner’s Preliminary Response was filed). Under the Interim Procedure, “the PTAB will not deny institution of an IPR . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). This is what Petitioner stipulates. Ex. 1021; see Reply 4 n.1 (stating that Petitioner is filing a “Sotera stipulation,” which “precludes discretionary denial” under the Interim Procedure); Sur-Reply 5. Accordingly, we decline to deny institution under Fintiv.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under Section 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Turning to the first prong of Advanced Bionics, neither Schreibfeder nor Threlkel was cited during prosecution of the ’028 patent. See Ex. 1002; see also Ex. 1001, code (56). Further, we do not find anything in the prosecution history of the ’028 patent, such as an office action on the merits, that suggests the Examiner considered “the same or substantially the same prior art” as these references. See Ex. 1002. We disagree with Patent Owner that the Examiner considered “the same prior art” simply because Schreibfeder or Threlkel may have fallen within the same classes searched by the Examiner. See Sur-Reply 3. We are aware of no authority, and Patent Owner cites none, to support this position. Because we do not find that the same or substantially the same art or” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a minimum of a B.S. in engineering or a related field, as well as four to six years of industry experience designing or building amusement rides or motion simulator systems. Higher education by way of advanced degrees in a related field could substitute for years of experience. Pet. 6 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as we find that it is consistent with the ’028 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“controller” “should be construed as ‘one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.’” Pet. 7 (citing Ex. 1020). Patent Owner similarly proposes that the term “controller” should be construed as “one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.” See Prelim. Resp. 12. As both parties propose identical interpretations of the term “controller” (compare Pet. 7, with Prelim. Resp. 2), and Patent Owner at this time does not dispute that the asserted prior art (Schreibfeder) teaches the recited “controller,” this term is not in controversy, and we do not construe it in this Decision. See infra Section III.E.3.h; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,266,028 - PTAB · Mar 17, 2023 · IPR2022-01604 · APJ William A Capp · IPR · Institution
The Board instituted IPR on claims 1–19 after finding a reasonable likelihood that claim 1 is unpatentable over King and Rokkaku.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Invata has shown a reasonable likelihood of prevailing on its challenge that claim 1 is unpatentable over King and Rokkaku. Under prevailing law, a determination that any one claim is reasonably likely to be shown unpatentable in an IPR warrants institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–19 of the ‘144 patent on the following grounds of unpatentability: A. Claims 1–3, 5, and 9–19 under 35 U.S.C. § 103(a) as obvious over King and Rokkaku;” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Whether a person of ordinary skill in the art would have been motivated to modify or combine teachings in the prior art, and whether he would have had a reasonable expectation of success, are questions of fact.” Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286, 1291 (Fed. Cir. 2018) (quoting In re Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017)). Given that we are at the Preliminary Response stage of these proceedings, we are not inclined to engage in an exercise of weighing evidence, particularly on an incomplete record. We determine, on the current record, that Petitioner sufficiently demonstrates at this stage of the proceeding that a person having ordinary skill in the art would have had reason to combine King and Rokkaku. Resolution of the combinability issues in this case will be reserved for trial following discovery and more extensive briefing by the parties. slip op. at 9
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“An investigation into secondary considerations of non-obviousness can frequently be particularly fact intensive. It almost invariably requires discovery into matters that are outside of the scope and content of the prior art presented in an IPR petition. Considering that Invata is the Petitioner and has only now, for the first time in this proceeding, been presented with an outline of OPEX’s secondary considerations case and has not yet been given an opportunity for discovery, much less present evidence at a trial in response to OPEX’s case, we are disinclined to hinge the outcome of a Decision to Institute on the incomplete record before us. Resolution of this issue must await discovery and a presentation of evidence at trial.” slip op. at 10
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,192,144 - PTAB · Dec 22, 2015 · IPR2014-00963 · APJ David C Mckone · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving intact its decision that claims 1–16 were not shown unpatentable over the asserted obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the Decision should be modified is on Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Figure 6 is a detailed diagram of a TDM FIFO receiver. Ex. 1006, 10:34– 35. “The TDM slot counter 200 and enable DP-RAM 202 operate as for the TDM FIFO driver 180-1 shown in FIG. 5,2 to identify when the receiver 212 is to be active.” Id. at 10:36–39. When DP RAM Enable 202 of Figure 3 (or Figure 5) enables driver 208 to permit DP RAM Data 204 to assert data at a particular slot, the corresponding DP RAM Enable 202 of Figure 6 enables receiver 212 to remove data from the bus at the same time slot. Id. at 10:36–43. As with the DP RAM Enable 202 of Figure 3, the DP RAM Enable 202 of Figure 6 does not determine which slot is associated with which DSP. It simply allows data to pass through during an enabled time slot to FIFO Data 214, which clocks data into the DSP associated with the enabled time slot. Id. In the Decision, we found that “Petitioner and Dr. Stark do not explain persuasively how simply reprogramming DP RAM Enable 202 would provide a different mapping between the data stored in DP RAM Data 204 and the DSPs.” Dec. 27. Simply reprogramming the corresponding DP RAM Enable 202 of Figure 6 to coincide with the mapping of DP RAM Enable 202 of Figure 3 does not address this deficiency. The Decision did not discuss Figure 6 explicitly. Nevertheless, because Petitioner’s proposed re-programming of its DP RAM Enable 202 mirrored that of Figure 3’s DP RAM Enable 202, we implicitly rejected Petitioner’s arguments regarding” slip op. at 7
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“frequency hopping. Req. 4–5 (citing Ex. 1023, 33:6–13, 34:3–14, 43:12– 44:1). Petitioner did not make this argument in the Reply. Indeed, Petitioner made the opposite argument—criticizing the same testimony for stating that the ’480 patent does not disclose implementing the optional frequency hopping portion of GSM. Reply 5–6. We find that Dr. Wells has testified consistently that the portion of the ’480 patent quoted above “actually means . . . that it can support GSM, and then it characterizes GSM as a frequency hopping standard. It doesn’t say that it supports frequency hopping.” Ex. 1023, 34:10–14; accord Ex. 2007 ¶ 78. We continue to credit Dr. Wells’s testimony.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“LLC, 805 F.3d 1064 (Fed. Cir. 2015). Req. 2, 13–15. Belden addressed the Board’s denial of a motion to exclude reply expert testimony as beyond the proper scope of a reply, as informed by our Office Patent Trial Practice Guide.3 805 F.3d at 1077–78. In upholding the Board’s denial, the Federal Circuit noted that “[e]vidence admitted in rebuttal to respond to the patent owner’s criticisms will commonly confirm the prima facie case. That does not make it necessary to the prima facie case.” Id. at 1079. Petitioner argues that it should have been permitted to present responsive evidence confirming the prima facie case it presented in the Petition. Req. 13–14. Petitioner’s second theory for combining the ’480 patent and GSM 05.02, however, is not designed to support or confirm the prima facie case it presented in the Petition. As explained above (taking into account Petitioner’s Figure 6 argument), and in the Decision (at 25), the prima facie case presented in the Petition was that a skilled artisan would have modified the ’480 patent simply by reprogramming the DP RAM Enable 202 mappings. Petitioner’s second Reply argument was that a skilled artisan would have modified different components of the ’480 patent “without any modification to the memory (DP RAM Enable) mapping 3 “While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. The Board will not attempt to sort proper from improper portions of the reply. Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). used.” Req. 14 (quoting Ex. 1022 (Stark Reply Decl.) ¶ 43).4 This is an attempt to argue an entirely new prima facie case. Thus, our refusal to consider Petitioner’s second reply argument was consistent with Belden and the Office Trial Practice Guide.” slip op. at 9
§ 103 obviousnessPatents in suitUS 6,952,408 - Universal Remote Control, Inc. v. Universal Electronics, Inc.No claims unpatentablePTAB · Dec 10, 2015 · IPR2014-01146 · APJ William A Capp · IPR · Final written decision
Claims 13–15 were not shown unpatentable because Dubil does not disclose the claimed configuration stored in and accessed by the entertainment device.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“As between the foregoing two possibilities, we think the latter construction is the correct one. The claims indicate that a configuration of the entertainment device is a construct that can be “downloaded” from a computer. Id., claim 13. It is also a construct that can be “access[ed] and use[d]” in association with a controlling device activity key commend value. Id. These attributes are more consistent with a set of executable instructions and data that is stored in memory than a physical state or configuration of the entertainment device after it has been configured. Id. at 6:38 (“finalized and stored”); 6:41 (“stored and associated”). In view of the foregoing we construe configuration of the entertainment device in claims 13 and 14 as referring to information stored in memory in the entertainment device that can be accessed and used to configure the entertainment device.” slip op. at 16
- ExcludeMotion to exclude, grantedGranted
“The admissibility of evidence in an IPR proceeding generally is governed by the Federal Rules of Evidence. See 37 C.F.R. § 42.62(a), Office Patent Trial Practice Guide, 77 Fed. Reg. 48758. Under Federal Rule of Evidence 611(c), leading questions should not be used on the direct examination of a witness except as may be necessary to develop the witness’ testimony. “A leading question is one that suggests to the witness the answer desired by the examiner.” McCormick, EVIDENCE § 6 (7th ed. 2013). Questions that begin, “Isn’t it true that” or “Don’t you agree that” typically suggest the answer and are leading. Other types of questions, such as questions that call merely for a yes or no answer or that ask the witness to choose between alternatives posed by the questioner, may or may not be leading, depending on the context in which the question is asked, the tone of voice employed, and the body language or conduct of counsel. See, e.g., United States v. Warf, 529 F.2d 1170, 1174 (5th Cir. 1976) (prosecutor improperly led witness to make identification by pointing at the accused).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“We are not persuaded by Petitioner’s argument or evidence. Petitioner’s conclusion does not follow logically and necessarily from Petitioner’s underlying premises. The system configuration described by Petitioner just as easily could be accomplished by sending on/off commands to the various input and output components so that the desired input device is powered on and the non-desired input device is powered off. The same can be said of the output devices. Thus, the entertainment system, as a whole, can be configured by sending power on/off commands to various devices and then passively routing the input and output signals through the VCR. Petitioner cites to no explicit disclosure in Dubil where the VCR actively switches between a plurality of inputs and a plurality outputs. We have reviewed Dubil and find no such explicit disclosure. Neither do we find that Dubil discloses active switching of the VCR inherently. While it may be possible that the VCR could switch between sources and destinations, we are not persuaded that such functionality is necessarily present in Dubil for it to operate. Inherency may not be established by probabilities or possibilities. See Agilent Tech., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009). The mere fact that a certain thing may result from a given set of circumstances is not sufficient. Id. Furthermore, Dubil cannot associate a remote control activity key command value with a configuration of the entertainment device unless Dubil first possesses a configuration of the entertainment device within the meaning of claim 13. We are not persuaded that Dubil discloses a “configuration of the entertainment device” as we have construed the term. Petitioner’s evidence and argument focuses on Dubil’s entertainment system as a whole. However, “configuration of the entertainment device,” as it is used in claim 13, refers to a set of executable instructions and data stored in memory in the entertainment device that is first downloaded from a personal computer and is then accessed and used after the entertainment device receives a signal from the remote control that contains a command value that is associated with such configuration. Petitioner provides no persuasive evidence that Dubil’s VCR has memory that stores executable instructions and data in the form of a “configuration of the entertainment device” that is downloaded from a computer and is accessed and used as claimed.” slip op. at 22
- BurdenNot shown unpatentable
“Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Inasmuch as Dubil fails to disclose all elements of claim 13, we find that Petitioner has failed to establish, by a preponderance of the evidence, that Dubil anticipates claim 13. slip op. at 26
Patent outcomesUS 8,243,207 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 8,243,207 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Dec 9, 2015 · IPR2014-00921 · APJ Josiah C Cocks · IPR · Final written decision
Claims 23, 24, 60, and 61 are unpatentable as obvious over Robertson and Ungerboeck; claims 23 and 60 were not shown anticipated by Palicot.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“It is clear from the record evidence before us that, in the context of the ’783 patent, a connection between two components is not one that is considered properly as “direct” if there is an interleaver between those components. We understand that an “interleaver” is a structure that provides extensive reordering of data. For instance, record evidence characterizes a particular interleaver as a “pseudorandom block scrambler” that reads out data “in a specified permuted order.” Ex. 1009, 29. Indeed, the ’783 patent itself characterizes an interleaver as a “pseudo-random block scrambler” that operates to output data “in a specified (fixed) random order.” Ex. 1001, 5:57–61. In that respect, it is further understood from the ’783 patent that there are extensive considerations that go into the design of interleavers and the effect that a given interleaver has on the configuration, order, and characteristics of data. See id. at 9:53–13:54. Thus, the operations of an interleaver appear to constitute complex data reordering schemes where the “pseudorandom” scrambling of data is, at least in some cases, the desired goal. As noted above, in the context of an inter partes review, the Board construes claim terms based on their broadest reasonable construction that is consistent with the underlying specification. Here, with that guidance in mind, we do not discern that Intellectual Ventures’s position that the claim terms in question should be construed narrowly to prohibit any intervening structure that performs any type of operation that may be regarded as manipulating data or changing the order of data in some aspect, regardless of the nature or extent of the data reordering. To that end, while the reordering operations provided by an interleaver are not encompassed by “directly” connecting elements, we are not satisfied that Intellectual Ventures has provided a suitable evidentiary basis for its position that any intervening data reordering, of any kind, is the benchmark for evaluating whether structures are directly connected to one another. It also is clear from the Specification of the ’783 patent, and as we observed in our Decision instituting trial (Inst. Dec. 12–13), that a direct connection does not prohibit some intervening structures, such as the intervening presence of a switch. In considering the totality of the record before us, we do not discern that there is cause to deviate from the construction we initially adopted for “directly coupled”/“signal directly from” as a part of the Decision to institute trial. Accordingly, for purposes of this Final Written Decision, we maintain the understanding that components that are “directly” coupled to one another, or which receive signals “directly” from one another, excludes the presence of an interleaver between those components, but does not prohibit any and all intervening structures, such as a switch.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for patent owner
“Thus, the declarants are largely in agreement as to the level of ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“contends that Robertson discloses all the features of claims 23 and 60 (Pet. 49–54) with the exception of those features directed to “multilevel modulation” (id. at 53). In that regard, Ericsson contends that Robertson is directed to “binary modulation” rather than “multilevel modulation,” but points to Ungerboeck as disclosing multilevel modulation. Id. Referencing the declaration testimony of Mr. Mark Lanning (Ex. 1003), Ericsson contends the following: As noted by Mr. Lanning, it would have been obvious to one of ordinary skill in the art to combine Robertson and Ungerboeck to replace the binary modulation in Roberton’s coding system with multilevel modulation taught by Ungerboeck because it would yield the predictable result–that more data bits correspond to a modulated symbol, thereby enhancing bandwidth efficiency. Id. at 53–54. To that end, we understand that Ericsson proposes, and Mr. Lanning testifies (Ex. 1003 ¶ 230), that one of ordinary skill in the art would have had reason to substitute Ungerboeck’s multilevel 8-PSK modulator for Robertson’s binary modulator so as to enhance bandwidth efficiency.” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for patent owner
“ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16
Patent outcomesUS 6,023,783 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,023,783 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Dec 9, 2015 · IPR2014-01149 · APJ William A Capp · IPR · Final written decision
Claims 18–22 and 43–44, 46–49 are unpatentable as obvious; claims 25–26, 55–59, and 62–63 were not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“The complete exclusion of Dr. Cimini’s testimony is not warranted or necessary here. Intellectual Ventures argues that the instant dispute concerning Dr. Cimini’s testimony should not affect the admissibility of his opinion, but merely the weight the Board accords his opinion. Paper 49, 12. This is the path we choose to follow. By shielding Dr. Cimini from the Robertson CMS reference so that he did not address it in his declaration and was unprepared to testify about it at this deposition, Intellectual Ventures deprived itself of an opportunity to respond to Ericsson’s case. Accordingly, we DENY Ericsson’s motion to exclude 60–65, 79, 80, and 93 of Dr. Cimini’s declaration testimony (Ex. 2009), but discount the weight to be given such testimony in light of the foregoing discussion.” slip op. at 9
- Adverse judgmentDenied
“Under 37 C.F.R. § 42.73, a party may obtain termination of a proceeding by requesting entry of adverse judgment. However, we do not interpret Ericsson’s request as a request for entry of adverse judgment. To the contrary, we view Ericsson’s motion as an effort to prevent entry of an adverse judgment under circumstances where Ericsson reserves the right to challenge the patentability of claims 55–59, in this or another forum. Finally, Ericsson relies on our extraordinary and discretionary powers under 37 C.F.R. § 42.5(a) as a basis for grant of the relief sought. In denying Ericsson’s previous motion to correct the petition, we considered whether it was an appropriate exercise of our extraordinary powers to allow Ericsson to correct its petition. Paper 31, 14–15. We concluded that it was not. Id. Many of the same considerations that informed our decision to deny Ericsson’s motion to correct its petition also militate against a grant of relief in the instant situation.” slip op. at 20
- BurdenFwd mixedNot shown unpatentable
“Ericsson concedes that the mistake in its Petition with respect to claims 55–59 is a “fatal flaw” and, consequently, it wants to remove those claims from the proceeding. Tr. 74:3–8, a copy/paste error that originated in Mr. Lanning’s Declaration resulted in a deficient analysis of independent claims 55 and its dependent claims 56–59 . . . [a]t this point in the trial, both Patent Owner and Petitioner agree that the Petition is defective with respect to claim 55–59. Paper 52, 5–6. In view of the foregoing, we find that Ericsson has failed to carry its burden of proof with respect to the unpatentability of independent claim 55 and claims 56–59 that depend therefrom.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In our Decision to Institute, we construed “systematic convolutional encoder” on a preliminary basis, as an encoder that may output both encoded data and also original data (or its equivalent). In the Decision to Institute, we criticized Ericsson’s proposed construction because it focused on what it means for a coding system to be systematic to the exclusion of how the adjective “convolutional” also modifies the word “encoder.” DI 8–9. Similarly, we criticized Intellectual Ventures’s proposed construction because it focused on what it means for a coding system to be “convolutional,” to the exclusion of what it means to be “systematic.” Id. at 9. In the Decision to Institute, we admonished the parties to give 18 Claim 18 claims a “systematic recursive convolutional encoder.” Ex. 1001, 25:49. 19 Claim 43 is a method claim that claims “systematic convolutional encoded output elements.” Ex. 1001, 29:57. 20 Claim 55 is a method claim that claims “systematic convolutional encoded intermediate output elements.” Ex. 1001, 30:61–62. 21 Claim 62 is a method claim that claims “systematic convolutional encoded output elements.” Ex. 1001, 31:60–61. attention to our points of criticism in their respective Patent Owner’s Response and Petitioner’s Reply. Id. We instituted a trial on less than all challenged claims. DI. In particular, we did not institute a trial on claim 6. DI 14. In its Patent Owner’s Response, Intellectual Ventures indicated that the Board need not construe this term to resolve the instituted grounds. PO Resp. 13. In its Petitioner’s Reply, Ericsson simply states that it agrees with the Board’s claim construction in the Decision to Institute. Reply 6. The parties’ respective positions, as developed in Intellectual Ventures’s Patent Owner’s Response and Ericsson’s Reply do not rely on competing constructions of this term. Accordingly, we do not modify the construction of this term as set forth in our Decision to Institute. 2. “coded output elements” - “encoded output elements” (Claims 18, 19,” slip op. at 24
Patent outcomesUS 6,023,783 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,023,783 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCNo claims unpatentablePTAB · Oct 22, 2015 · IPR2014-00963 · APJ David C Mckone · IPR · Final written decision
Claims 1–16 were not shown unpatentable because the ’480 patent did not disclose frequency hopping and the proposed obviousness combination lacked a reasonable expectation of success.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“In the Decision to Institute, in light of an agreement between the parties, we preliminarily determined that “broadband transceiver,” recited in claim 1, means “a transceiver that covers a substantial portion of the bandwidth available to the wireless service provider who is operating the basestation,” with the clarification that such a transceiver does not include a set of single-frequency transceivers. Dec. 10. Neither party contests this construction. On the complete record, we maintain this construction. We further determined that no other claim term required express construction. Dec. 10. Neither party proposes a construction of any other term and we find it unnecessary to construe any other term to resolve the dispute between the parties.” slip op. at 8
- Skill levelSkill level board ownDecided for petitioner
“1. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art would have had at least a B.S. degree in Electrical Engineering, Computer Engineering, or the like, and at least three years of additional academic or industry experience. Pet. 11 (citing Ex. 1003 (Stark Decl.) ¶ 45). Dr. Wells “generally agree[s] with Dr. Stark in paragraph 45 of his declaration.” Ex. 2007 ¶ 20. We adopt the parties agreed statement of the level of skill of a person of ordinary skill in the art.” slip op. at 21
- Expert testimonyPetitioner expert discountedMixed
“Dr. Stark’s testimony also is not supported by the description in the ’480 patent. In one example, Dr. Stark testifies that: For the case of the receiver side (dehopping) as shown is Fig. 3, the same logical channel would “hop” onto different RF channels each successive GSM TDMA frame. This would mean that for a particular TDMA frame, a given logical channel, e.g., channel 1 on slot 1, would be at a particular RF channel such as indicated by location “27” in the table in Fig. 3. But in the next TDMA frame, the same logical channel, would be placed onto a different RF channel, e.g., location “2” in the table in Fig. 3. By the controller supplying a new mapping signal (table) every TDMA frame, the samples from the correct RF channel for the associated logical channel could be placed onto the TDM bus for processing by the corresponding DSP 18. Ex. 1022 ¶ 17. This is inconsistent with the description in the ’480 patent. Locations “27” and “2” in DP RAM Enable 202 merely indicate whether data can be asserted into time slots 27 and 2. Ex. 1006, 9:46–10:3. Changing the mapping in DP RAM Enable 202 to enable slot “2” and disable slot “27,” without additional changes elsewhere in the system, would not result in different RF channels being switched to the same logical channel. In this example, and the others cited above, Dr. Stark repeatedly testifies that simply re-programming DP RAM Enable 202 will change the mapping of physical RF channels and logical channels. Nevertheless, as Patent Owner argues (PO Resp. 26–27), the ’480 patent does not support that testimony. Because Dr. Stark’s testimony is inconsistent with the description in the ’480 patent, we give his testimony little weight.5” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(Ex. 1006, 5:4–17) describes a basestation’s exchange of RF signals with mobile subscriber terminals. Specifically, the passage is directed to the modulation of voice and data channels over RF carrier signals: “The RF carrier signals are modulated with voice and/or data (channel) signals which are to be coupled to the public switched telephone network (PSTN) by the basestation 10.” Ex. 1006, 5:6–9 (emphasis added). In that context, the ’480 patent explains that “[t]he particular modulation in use[] may be any one of a number of different wireless (air interface) standards such as the well known Advanced Mobile Phone Service (AMPS), time division multiple access (TDMA) such as IS-54B, code division multiple access (CDMA) such as IS-95, frequency hopping standards such as the European Groupe Speciale Mobile (GSM).” Id. at 5:9–17 (emphases added). We find that this passage states, at most, that the system described in the ’480 patent supports the modulation specified by the GSM standard. Petitioner admitted at the hearing that frequency hopping is not a modulation scheme and that GSM specifies the same modulation scheme whether or not frequency hopping is used. Tr. 62:17–63:23. The passage of column 5, lines 9–17, of the ’480 patent is consistent with the system of the ’480 patent being programmed to support the modulation scheme of GSM, without supporting the optional frequency hopping functionality. While GSM is referred to as a “frequency hopping standard[],” the frequency hopping functionality is inapposite to the modulation being discussed in the passage. Tr. 63:17–22 (“JUDGE McKONE: And you can use the same modulation regardless of whether you are using frequency hopping or not, is that right? MR. SPEARS: Exactly. Yeah, it’s the same slot. It’s the same framing. It’s the same TDMA frames. It is all the same.”). We find that the ’480 patent does not state, explicitly or implicitly, that the described system implements the optional frequency hopping functionality of GSM. We recognize that Dr. Stark testifies that “a [person of ordinary skill in the art] would have understood that explicit reference to GSM to include reference to the constituent part of the GSM standard that specifies frequency hopping, i.e., GSM 05.02, and thus a [person of ordinary skill in the art] would understand that the ʼ480 Patent discloses this limitation as described below.” Ex. 1003 ¶ 90. Dr. Stark’s testimony, however, relies on his assumption that frequency hopping is a type of modulation. Id. As noted above, Petitioner has conceded that frequency hopping is not a type of modulation. Accordingly, we do not credit Dr. Stark’s testimony on this point. At the hearing, Petitioner argued that “there is no reason to say you are doing frequency hopping unless you are frequency hopping.” Tr. 63:22– 23. We are not persuaded. The ’480 patent does not state that its system is “doing frequency hopping.” Rather, it characterizes GSM as a “frequency hopping standard[].” While this characterization may be relevant to obviousness (discussed below), it is not a statement explicitly showing that the system of the ’480 patent implements frequency hopping.” slip op. at 17
Patent outcomesUS 6,952,408 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,952,408 - Edmund Optics, Inc. v. Semrock, Inc.No claims unpatentablePTAB · Sep 16, 2015 · IPR2014-00599 · APJ William A Capp · IPR · Final written decision
Claims 33–36, 39–41, 44, and 45 were not shown unpatentable: MacLeod did not enable claim 33 for anticipation, and Edmund did not establish obviousness over MacLeod.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“After considering claim 33 in view of the specification, as a whole, we are not persuaded that the intrinsic record requires a departure from the plain and ordinary meaning of “multi-layer, thin-film, laser-line filters.” The standard for finding claim scope disavowal is exacting. See GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). It is not enough that the only embodiments, or all of the embodiments, contain a particular limitation. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Mere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal. See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009). Furthermore, even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure. See Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1315 (Fed. Cir. 2010). It is the claims that define the metes and bounds of the patentee’s invention. See Phillips, 415 F.3d at 1313. Thus, the patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope. See Thorner, 669 F.3d at 1366. Each claim does not need to cover every feature disclosed in a specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1182 (Fed. Cir. 2006). When a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“The MacLeod Treatise is a non-patent, printed publication. Edmund relies on In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012), for the proposition that a non-patent, printed publication is presumptively enabled for purposes of an anticipation analysis. Paper 69, 1. Semrock distinguishes Antor Media as being restricted to the context of patent prosecution. Paper 68, 3. The Court, in Antor Media, explained the underlying rationale for permitting a presumption of enablement during patent prosecution. [A]n examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible. An examiner, therefore, is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling. Consistent with the statutory frame-work and our precedent, we therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement. Antor Media, 689 F.3d at 1289. In the case of Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003), the Federal Circuit held that an accused infringer should be entitled to have a district court presume the enablement of unclaimed material in a prior art patent asserted against a patentee. Id. at 1355. In dicta, the Amgen Court stated that its reasoning “might” also apply to prior art printed publications. We note that by logical extension, our reasoning here might also apply to prior art printed publications as well, but as Sugimoto is a patent we need not and do not so decide today. See id. (emphasis added). Thus, the Amgen Court did not reach that issue in its decision. See id. District Courts are split on this issue. We note that at least one district court decision has held that a district court should presume that a prior art printed publication is enabled. See Robocast, Inc. v. Apple Inc., 39 F. Supp. 3d 552, 565 (D. Del. 2014). Other district courts maintain otherwise. See e.g., CA, Inc. v. Simple.com., Inc., 780 F. Supp. 2d 196, 250 (E.D.N.Y. 2009); Matsushita Elec. Indus. Co. v. Samsung Electronics Co., 2006 WL 1794768, *5 (D.N.J. June 26, 2006).” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“G. Ultimate Determination of Enablement A patent claim “cannot be anticipated by a prior art reference if the allegedly anticipatory [disclosure] cited as prior art [is] not enabled.” In re NTP, Inc., 654 F.3d 1279, 1301 (Fed. Cir. 2011). Although anticipation is a question of fact, whether a prior art reference is enabling is a question of law with underlying factual inquiries. Id. The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard for a patent application under section 112. See Verizon Services Corp., v. Cox Fibernet Virginia, Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010). Anticipation does not require the actual creation or reduction to practice of the prior art subject matter; anticipation requires only an enabling disclosure. See Schering Corp., v. Geneva Pharma, Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003); citing In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). Nevertheless, we determine that the MacLeod Treatise does not enable claim 33. Claim 33 is directed to optical performance parameters. There is no dispute that multi-layer, thin-film, laser-line filters comprised of alternating layers of ZnS and Cryolite were known in the prior art. Thus, Semrock distinguishes its invention over prior art soft-coated filters on the basis of optical performance, not on the basis of using the basic structure of alternating layers of refractive materials with Fabry-Perot cavities. Upon consideration of the various Wands factors, including the absence of any working examples that demonstrate that Edmund’s theoretical calculations are capable of realization, we conclude that Semrock has carried its burden of showing that the MacLeod Treatise does not enable claim 33.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“By waiting and filing its expert declaration after Semrock filed its Patent Owner Response, Edmund effectively precluded Semrock from addressing Professor MacLeod’s Exhibit 1029 declaration in its Response. This also effectively precluded Semrock’s expert, Dr. Rancourt, from responding to Professor MacLeod’s belated testimony in his declaration that was filed in support of Semrock’s Response. We will not countenance such tactics. See Murphy v. Village of Hoffman Estates, 1999 U.S. Dist. LEXIS 3320, at *5–6 (N.D. Ill. 1999) (“[I]t is established beyond peradventure that it is improper to sandbag one’s opponent by raising new matter in reply.”). A Reply that belatedly presents evidence will not be considered. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767. Edmund’s original Petition asserted a ground of unpatentability over the ZnS/Cryolite of Figure 7.26 of the MacLeod Treatise. If Edmund wanted to present a ground of unpatentability over the ZnS/Cryolite embodiment of Figure 7.26 in combination with a tantala/silica embodiment, Edmund should have presented evidence as to how and why a person of ordinary skill in the art would have combined the two embodiments to achieve the invention of claim 33 contemporaneous with the filing of its original Petition. See KSR, 550 U.S. at 418 (requiring articulated reasoning with rationale underpinning as to how or why a person of ordinary skill in the art would have combined or modified the teachings of the prior art). Presenting such evidence and argument for the first time in a Reply is untimely.” slip op. at 43
Patent outcomesUS 7,119,960 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,119,960
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.